Lois Law

MILLER v. UNIVERSAL CITY STUDIOS, INC., 650 F.2d 1365 (5th Cir. 1981)


No. 78-3772.

United States Court of Appeals, Fifth Circuit.

July 23, 1981.

  Barry R. Davidson, Miami, Fla., Youngman, Hungate & Leopold,
Louis P. Petrich, Los Angeles, Cal., for defendants-appellants.

  Fine, Jacobson, Block & Semet, Irwin J. Block, Joseph H.
Serota, Miami, Fla., Arthur R. Miller, Cambridge, Mass., for

  Appeal from the United States District Court for the Southern
District of Florida.

  Before RONEY, HILL and KRAVITCH, Circuit Judges.

  RONEY, Circuit Judge:

[1] A sensational kidnapping, committed over a decade ago,
furnishes the factual backdrop for this copyright infringement
suit. The issue is whether a made-for-television movie
dramatizing the crime infringes upon a copyrighted book depicting
the unsuccessful ransom attempt. After careful and lengthy study
and consideration, we conclude that the verdict for plaintiff
must be reversed and the cause remanded for a new trial because
at the request of plaintiff and over defendants' objection, the
case was presented and argued to the jury on a false premise:
that the labor of research by an author is protected by

[2] The decision to reverse is made more difficult because the
record and the arguments to this Court reveal sufficient evidence
to support a finding of infringement and a verdict for plaintiff
under correct theories of copyright law. Plaintiff's presentation
and argument to the jury, however, make it improper to conclude
that the short erroneous instruction, imbedded in a field of
proper instructions, was harmless error.

[3]                              Facts

[4] The facts are fully developed in the district court's opinion,
Miller v. Universal City Studios, Inc., 460 F.Supp. 984
(S.D.Fla. 1978). A synopsis will suffice for purposes of this

[5] In December 1968 the college-aged daughter of a wealthy Florida
land developer was abducted from an Atlanta motel room and buried
alive in a plywood and fiberglass capsule. A crude life-support
system kept her alive for the five days she was underground
before her rescue. Gene Miller, a reporter for the Miami
Herald, covered the story and subsequently collaborated with the
victim to write a book about the crime. Published in 1971 under
the title 83 Hours Till Dawn, the book was copyrighted along
with a condensed version in Reader's Digest and a serialization
in the Ladies Home Journal. The co-author has assigned her
interest in this litigation to Miller.

[6] In January 1972 a Universal City Studios (Universal) producer
read the condensed version of the book and thought the story
would make a good television movie. He gave a copy of the book to
a scriptwriter, who immediately began work on a screenplay.
Although negotiations for purchase of the movie rights to 83
Hours Till Dawn were undertaken by Universal, no agreement with
Miller was ever reached. The scriptwriter was eventually advised
that use of the book in completing the script was "verboten." The
movie was completed, however, and aired as an ABC Movie of the
Week, The Longest Night.

[7] The evidence at trial was conflicting on whether the
scriptwriter relied almost entirely on the book in writing the
screenplay or whether he arrived at his version of the kidnapping
story independently. Both plaintiff and his expert witness
testified to numerous similarities between the works. The jury,
which had copies of the book and viewed the movie twice during
the trial, found the movie infringed Miller's copyright and
awarded him over $200,000 in damages and profits.

[8] The most substantial question presented on appeal is whether
the district court erred in instructing the jury that "research
is copyrightable." Because the Court finds reversible error in
this regard, other issues raised on this appeal will be discussed
only as necessary to avoid further confusion on retrial.

[9]                   Is Research Copyrightable?

[10] The district court instructed the jury that if an author
engages in research on factual matters, "his research is
copyrightable." This instruction, at best confusing, at worst
wrong, was given with some reluctance by the trial court over the
strenuous objection of defendants on the urging by plaintiff,
"That's the heart of the case."

[11] As it develops on appeal, plaintiff may have won without the
instruction, but later explanation by the trial court and the
brief on appeal convinces this Court that the idea conveyed to
the jury by the court and trial counsel contained an erroneous
view of the law. In context, the instruction is found in this
portion of the extended jury charge:

    Copyrightability is best defined in terms of what
  can and cannot be copyrighted. Ideas can never be
  copyrighted. Only the particular expression of an
  idea can be copyrighted. A general theme cannot be
  copyrighted but its expression throughout the pattern
  of the work, the sequence of its events, the
  development of the interplay of its characters, and
  its choice of detail and dialogue can be copyrighted.
  If, however, the expression of the idea necessarily
  follows from the idea to such an extent that the idea
  is capable of expression only in a more or less
  stereotyped form, it is not copyrightable.

    Similarly, in a case like the instant one, which
  deals with factual matters such as news events, the
  facts themselves are not copyrightable but the form
  of expression of the facts and their arrangement and
  selection are copyrightable. Moreover, if an author,
  in writing a book concerning factual matters, engages
  in research on those matters, his research is
  copyrightable. As was the case with ideas, if the
  expression arrangement and selection of the facts
  must necessarily, by the nature of the facts, be
  formulated in given ways then they are not
  copyrightable. (Challenged instruction underlined).

[12] It is well settled that copyright protection extends only to an
author's expression of facts and not to the facts
themselves.[fn1] See, e. g., Rosemont Enterprises, Inc. v.
Random House, Inc., 366 F.2d 303, 309 (2d Cir. 1966), cert.
denied, 385 U.S. 1009, 87 S.Ct. 714, 17 L.Ed.2d 546 (1967);
Chicago Record-Herald Co. v. Tribune Association, 275 F. 797,
798-99 (7th Cir. 1921); Alexander v. Haley, 460 F.Supp. 40, 45
(S.D. N.Y. 1978); Lake v. Columbia Broadcasting System, 140
F.Supp. 707, 708-09 (S.D.Cal. 1956). This dichotomy between facts
and their expression derives from the concept of originality
which is the premise of copyright law. Under the Constitution,
copyright protection may secure for a limited time to "Authors .
. . the exclusive Right to their respective Writings." U.S.Const.
Art. I, § 8, cl. 8. An "author" is one "to whom anything owes its
origin; originator; maker; one who completes a work of science or
literature." Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53,
58, 4 S.Ct. 279, 281, 28 L.Ed. 349 (1884). Obviously, a fact
does not originate with the author of a book describing the fact.
Neither does it originate with one who "discovers" the fact. "The
discoverer merely finds and records. He may not claim that the
facts are `original' with him although there may be originality
and hence authorship in the manner of reporting, i. e., the
`expression,' of the facts." 1 M. Nimmer, Nimmer on Copyright §
2.03[E], at 2-34 (1980). Thus, since facts do not owe their
origin to any individual, they may not be copyrighted and are
part of the public domain available to every person.

[13] The district court's charge to the jury correctly stated that
facts cannot be copyrighted. Nevertheless, in its order denying
defendants' motion for a new trial the court said it viewed "the
labor and expense of the research involved in the obtaining of
those uncopyrightable facts to be intellectually distinct from
those facts and more similar to the expression of the facts than
to the facts themselves." Miller v. Universal City Studios,
Inc., 460 F.Supp. at 987. The court interpreted the copyright
law to reward not only the effort and ingenuity involved in
giving expression to facts, but also the efforts involved in
discovering and exposing facts. In its view, an author could not
be expected to expend his time and money in gathering facts if he
knew those facts, and the profits to be derived therefrom, could
be pirated by one who could then avoid the expense of obtaining
the facts himself. Applying this reasoning to the case at bar,
the court concluded "[i]n the age of television `docudrama' to
hold other than research is copyrightable is to violate the
spirit of the copyright law and to provide to those persons and
corporations lacking in requisite diligence and ingenuity a
license to steal." Id. at 988.

[14] Thus the trial court's explanation of its understanding of its
charge undercuts the argument to this Court that the word
"research" was intended to mean the original expression by the
author of the results of the research, rather than the labor of

[15] The issue is not whether granting copyright protection to an
author's research would be desirable or beneficial, but whether
such protection is intended under the copyright law.[fn2] In
support of its instruction, the district court cited a number of
cases, one of which involved the use of another's historical
research in writing a literary work.[fn3]

[16] It is difficult to adequately distinguish some of the directory
cases, and particularly the language of the opinions. See
Schroeder v. William Morrow & Co., 566 F.2d 3 (7th Cir. 1977);
Adventures in Good Eating, Inc. v. Best Places to Eat, Inc.,
131 F.2d 809 (7th Cir. 1942); Leon v. Pacific Telephone &
Telegraph Co., 91 F.2d 484 (9th Cir. 1937); Jeweler's Circular
Publishing Co. v. Keystone Publishing Co., 281 F. 83 (2d Cir.),
cert. denied, 259 U.S. 581, 42 S.Ct. 464, 66 L.Ed. 1074 (1922);
Southwestern Bell Telephone Co. v. Nationwide Independent
Directory Service, Inc., 371 F.Supp. 900 (W.D.Ark. 1974). A
copyright in a directory, however, is properly viewed as resting
on the originality of the selection and arrangement of the
factual material, rather than on the industriousness of the
efforts to develop the information. See Nimmer, supra, at §
3.04. Copyright protection does not extend to the facts
themselves, and the mere use of the information contained in a
directory without a substantial copying of the format does not
constitute infringement. See, e. g., New York Times Co. v.
Roxbury Interface, Inc., 434 F.Supp. 217 (D.N.J. 1977) (reference
to a copyrighted index to produce a substantially different type
of index is fair use); Triangle Publications, Inc. v. Sports
Eye, Inc., 415 F.Supp. 682 (E.D.Pa. 1976) (holding that data
compiled and published by plaintiff in the "Past Performances"
section of the Daily Racing Form could be used by defendant to
make the comparisons and judgments found in its competing
publication Fast Performances without infringing plaintiff's
copyright because only the method or form of expressing the data,
and not the data itself, is copyrightable).

[17] In any event, it may be better to recognize the directory cases
as being in a category by themselves rather than to attempt to
bring their result and rationale to bear on nondirectory cases.
Under the 1909 Copyright Act, directories are specifically
identified as copyrightable subject matter, 17 U.S.C. § 5(a)
(1970),[fn4] and the rule is now well settled that they can be
copyrighted, see Nimmer, supra, at § 2.04[B]. However
appropriate it may be to extend copyright protection to the
selection and arrangement of factual material in a directory if
it involves originality and hence authorship, and however
difficult it may be to reconcile these cases with the principle
that facts are not copyrightable, see Nimmer, supra, at § 3.04,
the special protection granted directories under the copyright
law has generally not been applied to other factual endeavors.
For example, the labor involved in news gathering and
distribution is not protected by copyright although it may be
protected under a misappropriation theory of unfair competition.
International News Service v. The Associated Press, 248 U.S. 215,
39 S.Ct. 68, 63 L.Ed. 211 (1918). In the International
News case, the Supreme Court commented in dicta that while a
newspaper story, as a literary production, can by copyrighted,

  the news element - the information respecting current
  events contained in the literary production - is not
  the creation of the writer, but is a report of
  matters that ordinarily are public juris; it is the
  history of the day. It is not to be supposed that the
  framers of the Constitution . . . intended to confer
  upon one who might happen to be the first to report a
  historic event the exclusive right for any period to
  spread the knowledge of it.

[18] Id. at 234, 39 S.Ct. at 71.

[19] Apart from the directory cases, the only decision cited to this
Court which lends support for the challenged instruction is
Toksvig v. Bruce Publishing Co., 181 F.2d 664 (7th Cir. 1950).
In Toksvig, plaintiff had written a biography of Hans Christian
Anderson after extensive research of primary Danish sources.
Defendant, who could not read Danish, copied twenty-four specific
passages from plaintiff's book in writing her own biography. The
Seventh Circuit held the copying of these passages, original
translations from Danish separately copyrightable under 17 U.S.C. § 6
(1970), constituted copyright infringement. The court went on
to reject defendant's fair use defense, primarily because
defendant's use of the translations from Danish had allowed her
to write her biography in one-third the time it took plaintiff.
The court said the question was not whether defendant could have
obtained the same information by going to the sources plaintiff
had used, but whether she in fact had done her own independent
research. Id. at 667.

[20] Although most circuits apparently have not addressed the
question, the idea that historical research is copyrightable was
expressly rejected by the Second Circuit in the more soundly
reasoned case of Rosemont Enterprises, Inc. v. Random House,
Inc., 366 F.2d 303 (2d Cir. 1966), cert. denied, 385 U.S. 1009,
87 S.Ct. 714, 17 L.Ed.2d 546 (1967). In Rosemont, it was
alleged that defendant's biography of Howard Hughes infringed the
copyright on a series of Look articles about Hughes. The
district court had asserted in sweeping language that an author
is not entitled to utilize the fruits of another's labor in lieu
of independent research, relying on Toksvig. The Second Circuit
reversed. While not challenging the holding of Toksvig that
substantial copying of specific passages amounted to copyright
infringement, it rejected the language regarding independent

  We . . . cannot subscribe to the view that an author
  is absolutely precluded from saving time and effort
  by referring to and relying upon prior published
  material. ... It is just such wasted effort that the
  proscription against the copyright of ideas and
  facts, and to a lesser extent the privilege of fair
  use, are designed to prevent.

[21] 366 F.2d at 310 (citations omitted).

[22] The Second Circuit has adhered to its position in the most
recent appellate case to address the question, Hoehling v.
Universal City Studios, Inc., 618 F.2d 972 (2d Cir.), cert.
denied, ___ U.S. ___, 101 S.Ct. 121, 66 L.Ed.2d 49 (1980).
Hoehling involved various literary accounts of the last voyage
and mysterious destruction of the German dirigible Hindenberg.
Plaintiff A. A. Hoehling published a book in 1962 entitled, Who
Destroyed the Hindenberg? Written as a factual account in an
objective, reportorial style, the premise of his extensively
researched book was that the Hindenberg had been deliberately
sabotaged by a member of its crew to embarrass the Nazi regime.
Ten years later, defendant Michael McDonald Mooney published his
book, The Hindenberg. While a more literary than historical
account, it also hypothesized sabotage. Universal City Studios
purchased the movie rights to Mooney's book and produced a movie
under the same title, although the movie differed somewhat from
the book. During the litigation, Mooney acknowledged he had
consulted Hoehling's book and relied on it for some details in
writing his own, but he maintained he first discovered the
sabotage theory in Dale Titler's Wings of Mystery, also
released in 1962.

[23] Hoehling sued Mooney and Universal for copyright infringement.
The district court granted defendants' motion for summary
judgment and the Second Circuit affirmed, holding that, assuming
both copying and substantial similarity, all the similarities
pertained to categories of noncopyrightable material. The court
noted the sabotage hypothesis espoused in Hoehling's book was
based entirely on interpretation of historical fact and was not
copyrightable. 618 F.2d at 979. The same reasoning applied to
Hoehling's claim that a number of specific facts, ascertained
through his personal research, were copied by defendants. Relying
on the Rosemont case, the court stated that factual information
is in the public domain and "each [defendant] had the right to
`avail himself of the facts contained' in Hoehling's book and to
`use such information, whether correct or incorrect, in his own
literary work.'" 618 F.2d at 979 (quoting Greenbie v. Noble,
151 F.Supp. 45, 67 (S.D.N.Y. 1957)). See also Suid v. Newsweek
Magazine, 503 F.Supp. 146 (D.D.C. 1980).

[24] We find the approach taken by the Second Circuit in Hoehling
and Rosemont to be more consistent with the purpose and
intended scope of protection under the copyright law than that
implied by Toksvig. The line drawn between uncopyrightable
facts and copyrightable expression of facts serves an important
purpose in copyright law. It provides a means of balancing the
public's interest in stimulating creative activity, as embodied
in the Copyright Clause, against the public's need for
unrestrained access to information. It allows a subsequent author
to build upon and add to prior accomplishments without
unnecessary duplication of effort. As expressed by the Second
Circuit in Hoehling:

  The copyright provides a financial incentive to those
  who would add to the corpus of existing knowledge by
  creating original works. Nevertheless, the protection
  afforded the copyright holder has never extended to
  history, be it documented fact or explanatory
  hypothesis. The rationale for this doctrine is that
  the cause of knowledge is best served when history is
  the common property of all, and each generation
  remains free to draw upon the discoveries and
  insights of the past. Accordingly, the scope of
  copyright in historical accounts is narrow indeed,
  embracing no more than the author's original
  expression of particular facts and theories already
  in the public domain.

[25] 618 F.2d at 974.

[26] The valuable distinction in copyright law between facts and the
expression of facts cannot be maintained if research is held to
be copyrightable. There is no rational basis for distinguishing
between facts and the research involved in obtaining facts. To
hold that research is copyrightable is no more or no less than to
hold that the facts discovered as a result of research are
entitled to copyright protection. Plaintiff argues that extending
copyright protection to research would not upset the balance
because it would not give the researcher/author a monopoly over
the facts but would only ensure that later writers obtain the
facts independently or follow the guidelines of fair use if the
facts are no longer discoverable. But this is precisely the scope
of protection given any copyrighted matter, and the law is clear
that facts are not entitled to such protection. We conclude that
the district court erred in instructing the jury that research is

[27] Our inquiry does not end here, however. In reviewing a trial
court's instructions to the jury an appellate court must consider
the charge as a whole from the standpoint of the jury, in view of
the allegations made, the evidence presented and the arguments of
counsel. If the charge as a whole correctly instructs the jury,
no reversible error may be committed even though a portion of the
charge may be technically imperfect. Shelak v. White Motor Co.,
581 F.2d 1155, 1161 (5th Cir. 1978); Coughlin v. Capitol Cement
Co., 571 F.2d 290, 300 (5th Cir. 1978).

[28] In this case the erroneous statement of law was one sentence in
a charge of twelve pages correctly stating the distinction
between facts and expression and that facts are not
copyrightable. The idea that research is copyrightable was
nevertheless impressed upon the jury throughout the liability
phase of the trial. In opening argument, counsel for plaintiff
stressed the amount of labor and research done by Miller in
writing the book. Over defendants' objection, Miller was
permitted to testify extensively regarding the amount of time
spent researching the book. Although relevant to damages, such
testimony was clearly irrelevant to the question of whether
defendants' work had infringed plaintiff's book. In closing
argument, plaintiff's counsel again stressed that everything
Miller did in his research for eighteen to twenty months and put
in his book was copyrightable. The fact that counsel considered
the faulty instruction to be "the heart" and "the guts of the
case," as he told the trial court, is further indication that the
"research is copyrightable" theory permeated the entire liability
phase of the trial.

[29] Viewing the record as a whole, the Court is left with a
substantial and ineradicable doubt as to whether the jury was
properly guided in its deliberations. See McCullough v. Beech
Aircraft Corp., 587 F.2d 754 (5th Cir. 1979). Because there is
uncertainty as to whether the jury was actually misled, the
erroneous instruction cannot be ruled harmless and a new trial is

[30]             Exclusion of Defendants' Expert Witness

[31] Before trial the district court entered a general sequestration
order applicable to all witnesses, pursuant to Fed.R.Evid. 615.
Although sequestered, defendants' literary expert witness,
Professor Sullivan, received transcribed portions (known as daily
copy) of Gene Miller's trial testimony. When discovered on the
ninth day of trial, the court found this to be a clear and
intentional violation of the sequestration order and refused to
allow Professor Sullivan to testify.

[32] On appeal defendants challenge both the finding of a violation
of the rule and the exclusion of their expert witness as a
sanction for the violation. Since the sanction applied here would
be reasonable for a violation of rule 615, we address only
whether the district court correctly held that a violation

[33] Rule 615 provides:

    At the request of a party the court shall order
  witnesses excluded so that they cannot hear the
  testimony of other witnesses, and it may make the
  order of its own motion. This rule does not authorize
  exclusion of (1) a party who is a natural person, or
  (2) an officer or employee of a party which is a
  natural person designed as its representative by its
  attorney, or (3) a person whose presence is shown by
  a party to be essential to the presentation of his

[34] Defendants, contending it was not a violation of the rule to
allow Professor Sullivan to read daily copy in preparation for
his court appearance, argue (1) the reading of daily copy is not
a violation because rule 615 literally prohibits witnesses only
from hearing the testimony of other witnesses; (2) expert
witnesses are impliedly exempt from sequestration under the rule;
and (3) Professor Sullivan was expressly exempt from
sequestration under subsection (3) of the rule because he was
necessary for the management of the case.

[35] The purpose of the sequestration rule is to prevent the shaping
of testimony by one witness to match that of another, and to
discourage fabrication and collusion. Taylor v. United States,
388 F.2d 786 (9th Cir. 1967); United States v. Leggett,
326 F.2d 613 (4th Cir.), cert. denied, 377 U.S. 955, 84 S.Ct. 1633,
12 L.Ed.2d 499 (1964). The opportunity to shape testimony is as
great with a witness who reads trial testimony as with one who
hears the testimony in open court. The harm may be even more
pronounced with a witness who reads trial transcript than with
one who hears the testimony in open court, because the former
need not rely on his memory of the testimony but can thoroughly
review and study the transcript in formulating his own testimony.
The court properly held that providing a witness daily copy
constitutes a violation of rule 615.

[36] Defense counsel's statement during oral argument that it is a
common practice in the Miami area to allow witnesses to read
daily copy despite the existence of a sequestration order gives
us some cause for concern. There is nothing in the record to
substantiate counsel's statement, however, and we cannot
speculate that most attorneys in Miami either do not realize that
reading daily copy violates the sequestration rule or have
adopted a practice that violates the rule. The district judge
commented at trial that in the five years he had been on the
bench he had never heard of allowing witnesses to read daily

[37] Defendants argue that rule 615 must be read to impliedly
exclude from sequestration expert witnesses, who usually do not
testify regarding the facts of the case but only express their
opinion based on those facts, in order to prevent the rule from
conflicting with rule 703,[fn5] which permits an expert to base
his opinion on facts or data perceived by him at trial.
Defendants rely primarily on Morvant v. Construction Aggregates
Corp., 570 F.2d 626 (6th Cir. 1978), cert. dismissed, 439 U.S. 801,
99 S.Ct. 44, 58 L.Ed.2d 94 (1979), in which the court stated
it could "perceive little, if any, reason for sequestering a
witness who is to testify in an expert capacity only and not to
the facts of the case." Id. at 629. The Morvant court further
held, however, that rule 703 does not furnish an automatic basis
for exempting an expert from sequestration under rule 615. Id.
at 630. We agree. Whether or not it would be reasonable for a
trial court to exempt an expert witness from a sequestration
order, there is no required exemption implied under rule 615.
Exemption would be questionable in a case such as this, however,
where defendants' expert was to testify about the two works upon
which Gene Miller was giving his own similarity analysis.

[38] With respect to the contention the witness was exempt under the
express exception provided in subsection (3) of the rule for
persons who are essential to the presentation of a party's case,
defendants never sought an exemption for Professor Sullivan
either before trial or after the violation became known. They
only argued that Professor Sullivan's testimony was crucial to
their case. It also appears that defendants' literary expert is
probably not the type of expert intended to be exempt under this
exception. The Notes of the Advisory Committee on the Proposed
Rules suggest the third category of exempt witnesses contemplates
such person as either an agent who handled the transaction being
litigated or an expert needed to advise counsel in the management
of the litigation. We need not decide the issue, however, because
defendants failed to argue this exception to the trial court and
cannot now raise it on appeal. See Morvant, 570 F.2d at 628
(rejecting an identical argument for failure to present it to the
district court).

[39]          Testimony and Cross-Examination of Plaintiff

[40] Over defendants' objection, the trial judge allowed plaintiff
to testify as a lay witness regarding similarities between his
book and defendants' movie. The court refused to allow defendants
to cross-examine plaintiff and his expert witness regarding
similarities between books they had authored and earlier books by
other authors on the same subject. We perceive no error in either

[41] The admission of evidence is committed to the sound discretion
of the trial court. United States v. Ashley, 555 F.2d 462 (5th
Cir.), cert. denied, 434 U.S. 869, 98 S.Ct. 210, 54 L.Ed.2d 147
(1977); United States v. Hearod, 499 F.2d 1003 (5th Cir. 1974).
Fed.R.Evid. 701 is designed specifically to allow lay witnesses
to testify in a conclusory fashion under certain circumstances.
The rule states:

    If the witness is not testifying as an expert, his
  testimony in the form of opinions or inferences is
  limited to those opinions or inferences which are (a)
  rationally based on the perception of the witness and
  (b) helpful to a clear understanding of his testimony
  or the determination of a fact in issue.

[42] The plaintiff author in this case was in a unique position of
being intimately familiar with the allegedly infringed work. We
see no abuse of discretion in allowing him to testify on the
similarities between the book he had written and defendants'

[43] The district court also did not abuse its discretion in
limiting the scope of defendants' cross-examination of plaintiff
and his expert witness. The thrust of the attempted
cross-examination was to show that plaintiff and his expert had
both copied from previous works in their own writings. Defendants
argued to the trial court the cross-examination was relevant to
illustrate that the use of earlier depictions of historical facts
was an accepted literary practice and to cast doubt on the
credibility of the witnesses' testimony on what constitutes
unlawful copying. In refusing to allow defendants to pose this
line of questioning, the court found it irrelevant to the central
issue in the trial: whether defendants' movie infringed
plaintiff's copyright. The district court has wide discretion on
matters of relevancy and materiality of evidence, United States
v. Grimm, 568 F.2d 1136 (5th Cir. 1978), and we do not find the
determination of irrelevancy to be reversible error. Even if the
evidence was in some way relevant to the issues at trial, its
probative value was substantially outweighed by the danger of
unfair prejudice and confusion of the issues, and therefore could
be properly excluded under Fed.R.Evid. 403. The ruling did not
prevent defendants from establishing their fair use defense.

[44]        Introduction of Preliminary and Shooting Scripts

[45] To prevail on a claim of copyright infringement, a plaintiff
must prove ownership of the copyright and copying by the alleged
infringer. Ferguson v. National Broadcasting Co., 584 F.2d 111,
113 (5th Cir. 1978); M. Nimmer, 3 Nimmer on Copyright § 13.01
(1980). Since there is often no direct evidence of copying, it is
ordinarily established by proving access to the copyrighted
material and substantial similarity between the two works.
Nimmer, supra, at § 13.01[B]. A defendant can rebut such a
showing by offering evidence that his work was independently
created without reference to the prior work, since a copyright,
unlike a patent, does not confer an absolute monopoly over the
expression but only a right of control over the works which are
derived from the copyrighted work. Fred Fisher, Inc. v.
Dillingham, 298 F. 145 (S.D. N.Y. 1924); M. Nimmer, 2 Nimmer on
Copyright § 8.01. If defendant offers evidence of independent
creation, the plaintiff has the burden of proving that the
defendant in fact copied the protected material.

[46] Plaintiff in this case sought to prove copying by establishing
access, substantial similarity, and lack of independent creation.
In doing so, he was permitted to introduce into evidence several
preliminary scripts and the script used in filming the movie.

[47] It was not error for the court to allow plaintiff to introduce
the various scripts used in developing the movie. Because of the
different media involved, examination of the various scripts was
relevant to plaintiff's showing of the process by which the book
was transformed into the movie. Moreover, defendants offered
testimony that its movie was created independently from
plaintiff's book. To negate the inference of independent
creation, plaintiff offered the scripts into evidence to show the
manner and speed in which the movie was produced. Thus, the
various scripts were relevant and admissible on the issue of
independent creation, even though the ultimate test of
infringement was the film as broadcast. See Cain v. Universal
Pictures Co., 47 F.Supp. 1013 (S.D.Cal. 1942); DeMontijo v. 20th
Century Fox Film Corp., 40 F.Supp. 133 (S.D.Cal. 1941).

[48] In any event, it is doubtful defendants were prejudiced by
admission of the early scripts. They had an opportunity to point
out any changes that were made between these scripts and the
movie, and the jury was properly instructed that the question
before them was whether the movie as broadcast was substantially
similar to the book. See Huie v. National Broadcasting Co., 184
F.Supp. 198 (S.D.N.Y. 1960).

[49]           Cumulative Recovery of Damages and Profits

[50] In accordance with the jury verdict, plaintiff was awarded
$185,000 in damages and $31,750 in profits earned by defendants
as a result of their unlawful infringement. Defendants assert the
award of both damages and profits was improper.

[51] The Copyright Act of 1909, which governed the trial of this
case, provides that an infringer is liable for "such damages as
the copyright proprietor may have suffered due to the
infringement, as well as all the profits which the infringer
shall have made from such infringement." 17 U.S.C. § 101(b)
(1970). Although the statutory language of section 101(b)
explicitly provides for a cumulative recovery, confusion was
engendered by language in the legislative history of the 1909 Act
which indicated the legislators may have intended only an
alternative recovery. H.R.Rep. No. 2222, 60th Cong., 2d Sess. 15
(1909). In the face of these contradictory signals, courts have
divided on the issue. Compare Sid & Marty Krofft Television
Productions, Inc. v. McDonald's Corp., 562 F.2d 1157 (9th Cir.
1977); Universal Pictures Co. v. Harold Lloyd Corp., 162 F.2d 354
(9th Cir. 1947), with Thomas Wilson & Co. v. Irving J.
Dorfman Co., 433 F.2d 409 (2d Cir. 1970), cert. denied,
401 U.S. 977, 91 S.Ct. 1200, 28 L.Ed.2d 326 (1971); Peter Pan
Fabrics, Inc. v. Jubela Fabrics, Inc., 329 F.2d 194 (2d Cir.
1964); Baldwin Cooke Co. v. Keith Clark, Inc., 420 F.Supp. 404
(N.D.Ill. 1976). The 1976 revision of the Copyright Act resolved
the conflict in favor of cumulative recovery. See 17 U.S.C.A. §

[52] The question is one of first impression in this Circuit. This
Court generally adheres to the literal statutory language and has
rejected "attempts to use legislative history to override the
unambiguous language of the statute." Brennan v. Taft
Broadcasting Co., 500 F.2d 212, 217 (5th Cir. 1974) (emphasis in
original). See also United States v. Second National Bank of
North Miami, 502 F.2d 535, 539-40 (5th Cir. 1974), cert.
denied, 421 U.S. 912, 95 S.Ct. 1567, 43 L.Ed.2d 777 (1975). The
language of section 101(b) unambiguously provides for the
recovery of both actual damages and profits. This reading is
consistent with the purpose of copyright law to discourage
wrongful infringement as well as to compensate the copyright
owner. See F. W. Woolworth Co. v. Contemporary Arts, Inc.,
344 U.S. 228, 233, 73 S.Ct. 222, 225, 97 L.Ed. 276 (1952);
H.R.Rep. No. 94-1476, 94th Cong., 2d Sess. 161, reprinted in
[1976] U.S. Code Cong. & Ad.News 5659, 5777. We therefore hold a
plaintiff may recover both damages sustained by him and profits
earned by the infringers as a result of unlawful infringement.

[53]                           Conclusion

[54] Additional issues raised by defendants on appeal, including the
correctness of the special verdict form, the propriety of certain
comments made by plaintiff's counsel during closing arguments,
and the reasonableness of the attorney's fee award to plaintiff,
need not be decided in light of the remand for a new trial.


[fn1] Similarly, a copyright protects only the expression of
ideas and not the ideas. The idea-expression dichotomy was given
express statutory recognition in the 1976 Copyright Act. Section
102(b) provides: "In no case does copyright protection for an
original work of authorship extend to any idea, procedure,
process, system, method of operation, concept, principle, or
discovery, regardless of the form in which it is described,
explained, illustrated, or embodied in such a work." 17 U.S.C.A.
§ 102(b).

[fn2] The statutory law applicable to this infringement action is
the Copyright Act of 1909, 17 U.S.C. § 1 et seq. (1970).
Although Congress revised and recodified the law in the Copyright
Act of 1976, 17 U.S.C.A. § 101 et seq., the legislative history
indicates the revision was not intended to change the scope of
copyright protection under the previous law: "Its purpose is to
restate, in the context of the new single Federal system of
copyright, that basic dichotomy between expression and idea
remains unchanged." House Report on the Copyright Act of 1976,
H.R.Rep. 94-1476, 94th Cong., 2d Sess. 52, reprinted in [1976]
U.S.Code Cong. & Ad.News 5659, 5670.

[fn3] Huie v. National Broadcasting Co., 184 F.Supp. 198
(S.D.N.Y. 1960). In light of the Second Circuit's decisions in
Hoehling v. Universal City Studios, Inc., 618 F.2d 972 (2d
Cir.), cert. denied, ___ U.S. ___ 101 S.Ct. 121, 66 L.Ed.2d 49
(1980), and Rosemont Enterprises, Inc. v. Random House, Inc.,
366 F.2d 303 (2d Cir. 1966), cert. denied, 385 U.S. 1009, 87
S.Ct. 714, 17 L.Ed.2d 546 (1967), the decision in Huie can no
longer be considered good law in that circuit, absent wholesale
appropriation of expression.

[fn4] Under the Copyright Act of 1976, directories fall into the
category of "compilations," copyrightable under 17 U.S.C.A. §
103. A compilation is defined as "a work formed by the collection
and assembling of preexisting materials or of data that are
selected, coordinated, or arranged in such a way that the
resulting work as a whole constitutes an original work of
authorship." 17 U.S.C.A. § 101.

[fn5] Fed.R.Evid. 703 provides:

    The facts or data in the particular case upon which
  an expert bases an opinion or inference may be those
  perceived by or made known to him at or before the
  hearing. If of a type reasonably relied upon by
  experts in the particular field in forming opinions
  or inferences upon the subject, the facts or data
  need not be admissible in evidence.

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